Pioneers & Leaders v Asia Pacific: Copyright Infringement & Passing Off in Horse-Racing Publication
Pioneers & Leaders (Publishers) Pte Ltd (“the plaintiff”) sued Asia Pacific Publishing Pte Ltd (“the defendant”) in the High Court of Singapore, alleging copyright infringement and passing off of the plaintiff's horse-racing publication, “Punter’s Way”. The plaintiff claimed the defendant's “Racing Guide” copied the format, presentation, and arrangement of information in the plaintiff's publication. The court, presided over by Lai Siu Chiu J, found in favor of the plaintiff, granting an injunction and ordering damages to be assessed by the Registrar.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Pioneers & Leaders sued Asia Pacific for copyright infringement and passing off of its horse-racing publication. The court ruled in favor of Pioneers & Leaders.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Pioneers & Leaders (Publishers) Pte Ltd | Plaintiff | Corporation | Judgment for Plaintiff | Won | Irving Choh, Lim Bee Li |
| Asia Pacific Publishing Pte Ltd | Defendant | Corporation | Counterclaim Dismissed | Lost | Lai Tze Chang Stanley, Vignesh Vaerhn, Lim Ming Hui Eunice |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lai Siu Chiu | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Irving Choh | KhattarWong |
| Lim Bee Li | KhattarWong |
| Lai Tze Chang Stanley | Allen & Gledhill LLP |
| Vignesh Vaerhn | Allen & Gledhill LLP |
| Lim Ming Hui Eunice | Allen & Gledhill LLP |
4. Facts
- Plaintiff publishes “Punter’s Way” since 1977, featuring horse-racing information in tables.
- Defendant publishes “Racing Guide,” a competing horse-racing magazine.
- Steven Michael Levar, defendant's managing director, was previously employed by the plaintiff.
- Plaintiff alleged defendant copied the arrangement and format of tables in “Punter’s Way”.
- Defendant used similar color coding on its cover as the plaintiff.
- Defendant changed the direction of horses featured on its cover page to forward-racing horses similar to those shown on PW’s cover page.
- Defendant changed the position of the advertisement panel and placed it across at the bottom of RG’s cover page, similar to that of the PW.
5. Formal Citations
- Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd, Suit No 866 0f 2008, [2010] SGHC 211
6. Timeline
| Date | Event |
|---|---|
| Punter’s Way magazine first published. | |
| Racing Guide first published. | |
| Punter’s Way began using different colors on the front cover to differentiate race days. | |
| Steven Michael Levar registered Horse Racing International as a business in Singapore. | |
| Steven Michael Levar ceased services with Pioneers & Leaders. | |
| Steven Michael Levar informed the plaintiff’s managing-director that he owned a rival to Punter's Way. | |
| Defendant added a ‘Speed Map’ feature to the Racing Guide. | |
| Plaintiff alleged defendant's publications of Racing Guide had infringed the plaintiff’s copyright in Punter’s Way. | |
| A Graphic Analysis table was included in the Racing Guide. | |
| Speed Map and Graphic Analysis table were removed from the publications of the Racing Guide. | |
| Plaintiff alleged defendant passed off the Racing Guide as the Punter’s Way by using the same color coding on the front cover of Racing Guide. | |
| A “Fast Form” table was placed in between Tables 1 and 2 in Racing Guide. | |
| Plaintiff’s solicitors sent a letter of demand to the defendant alleging copyright infringement and passing off. | |
| Plaintiff agreed that the defendant had ceased the copyright infringement. | |
| Plaintiff alleged that the defendant had passed off the Racing Guide as the Punter’s Way. | |
| Market research conducted by Greg Coops. | |
| Judgment reserved |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that the defendant had infringed the plaintiff's copyright by copying a substantial part of the plaintiff's work.
- Category: Substantive
- Sub-Issues:
- Copying of a substantial part of a protected work
- Access to the alleged works
- Passing Off
- Outcome: The court found that the defendant had passed off its publication as that of the plaintiff by adopting a confusingly similar get-up, leading to a likelihood of confusion among members of the public.
- Category: Substantive
- Sub-Issues:
- Goodwill in the get-up of the publication
- Misrepresentation leading to confusion
- Likelihood of damage to goodwill
- Authorship of Copyright
- Outcome: The court held that an incorporated company can be an author of a copyright-protected work and that the duration of copyright owned by an incorporated entity is 70 years from the (expiration of the calendar) year in which the work was first published.
- Category: Substantive
- Sub-Issues:
- Whether an incorporated body can be an author of an original work
- Duration of copyright for incorporated entities
- Originality of Work
- Outcome: The court found that there had been sufficient skill and labor applied to the alleged Works and that the ‘originality’ of the alleged Works cannot be disputed.
- Category: Substantive
- Sub-Issues:
- Sufficient skill and labor applied to the alleged works
- Copyright protection in the selection and arrangement of information
8. Remedies Sought
- Injunction
- Damages
- Inquiry as to damages
9. Cause of Actions
- Copyright Infringement
- Passing Off
10. Practice Areas
- Intellectual Property Litigation
11. Industries
- Publishing
- Gambling
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Alteco Chemical Pte Ltd v. Chong Yean Wah (trading as Yamayo Stationery Manufacturer) | High Court | Yes | [1992] 2 SLR(R) 915 | Singapore | Cited to support the proposition that an incorporated company can be an ‘author’ of a copyright protected work. |
| Flamelite (S) Pte Ltd and others v. Lam Heng Chung and others | Court of Appeal | Yes | [2001] 3 SLR(R) 610 | Singapore | Cited for the principle that copyright law protects the expression of an idea, not the idea itself, and to emphasize that the existence of dissimilarities does not necessarily mean that there was no infringement or that there was no copying. |
| University of London Press Limited v University Tutorial Press Limited | High Court of Justice | Yes | [1916] 2 Ch 601 | England and Wales | Cited for the principle that the requirement of originality in copyright law relates solely to the form in which the work is expressed. |
| Auvi Pte Ltd v. Seah Siew Tee and another | High Court | Yes | [1991] 2 SLR(R) 786 | Singapore | Cited to define the threshold for originality in copyright law, stating that it does not mean novelty or uniqueness, but that the author created it and has not copied it from another, and that he has expended towards its creation a substantial amount of skill or labour. |
| Macmillan & Co Ltd v Cooper (K&J) | Unknown | Yes | [1923] 40 TRL 186 | United Kingdom | Cited to illustrate that the exact amount of skill, labour or judgment required for originality cannot be defined in precise terms. |
| British Northrop Ltd v Texteam Blackburn Ltd | Unknown | Yes | [1974] RPC 57 | United Kingdom | Cited to show that simplicity per se does not prevent a work from acquiring copyright. |
| Nichols Advanced Vehicle Systems Inc v Rees | Unknown | Yes | [1979] RPC 127 | United Kingdom | Cited to show that even drawings of things in common use such as engines and gear boxes are copyrightable. |
| Catnic Components Limited v Hill & Smith Limited | Unknown | Yes | [1979] FSR 619 | United Kingdom | Cited to explain that in deciding whether what had been reproduced by an alleged infringer is a substantial part of the work allegedly infringed, one must regard the quality (that is to say the importance) rather than the quantity of the part reproduced. |
| Ladbroke (Football) Ltd v William Hill (Football) Ltd | House of Lords | Yes | [1964] 1 WLR 273 | United Kingdom | Cited for the principle that in deciding whether what had been reproduced by an alleged infringer is a substantial part of the work allegedly infringed, one must regard the quality (that is to say the importance) rather than the quantity of the part reproduced. |
| S W Hart & Co Pty Ltd v Edwards Hot Water Systems | High Court of Australia | Yes | (1985) 61 ALR 251 | Australia | Cited to emphasize that the existence of dissimilarities does not necessarily mean that there was no infringement or that there was no copying. |
| Reckitt & Colman Products Ltd v Borden Inc | House of Lords | Yes | [1990] 1 WLR 491 | United Kingdom | Cited to summarize the three elements of an action in passing off: goodwill, misrepresentation, and damage. |
| CDL Hotels International Ltd v. Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] 2 SLR 550 | Singapore | Cited to summarize the three elements of an action in passing off: goodwill, misrepresentation, and damage, and to state that it is not necessary that there should be any confusion occasioned by the misrepresentation. |
| Tong Guan Food Products Pte Ltd v. Hoe Huat Hng Foodstuff Pte Ltd | Court of Appeal | Yes | [1991] 1 SLR(R) 903 | Singapore | Cited to emphasize the factual nature of the enquiry in establishing goodwill in a passing off action and that the appellant must show that the get-up is well known in connection with its business. |
| White Hudson & Co v Asian Organization Ltd | Privy Council (on appeal from Malaysia) | Yes | [1965] 1 MLJ 186 | Malaysia | Cited to emphasize the factual nature of the enquiry in establishing goodwill in a passing off action. |
| Virtual Map (Singapore) Pte Ltd v. Suncool International Pte Ltd | High Court | Yes | [2005] 2 SLR(R) 157 | Singapore | Cited to state that any original work which is thereafter derived from the infringement may nevertheless enjoy copyright. |
| Newsweek Inc v British Broadcasting Corporation | Unknown | Yes | [1979] RPC 441 | United Kingdom | Cited for the test to be applied in determining misrepresentation, which is whether ordinary sensible members of the public would be confused. |
| Associated Newspapers Ltd v. Express Newspapers | High Court of Justice | Yes | [2003] EWHC 1322 | England and Wales | Cited to support the finding that the titles of two newspapers, “The Mail” and “The Daily Mail”, created a likelihood of confusion, given the possibility of consumer’s imperfect recollection of the overall impression of the newspaper and its title. |
| Lego System Altieselskab and Anor v Lego M. Lemelstrich Ltd | Unknown | Yes | [1983] FSR 155 | United Kingdom | Cited to accept and admit as evidence, the market research findings of Coops as being a properly conducted survey of public opinion. |
| Saga Foodstuffs Manufacturing (Pte) Ltd v. Best Food Pte Ltd | High Court | Yes | [1994] 3 SLR(R) 1013 | Singapore | Cited to caution against adopting a narrow approach in determining whether similar labels on the packaging of two products were likely to cause confusion. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap. 63, 2006 Rev Ed) s 2 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 7A | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 10(1) | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 27 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 28 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 29 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 30 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 31 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 119(2)(a) | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 131 | Singapore |
| Copyright Act (Cap. 63, 2006 Rev Ed) s 195 | Singapore |
| Interpretation Act (Cap 1, 2002 Rev Ed) s 2 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Horse-racing publication
- Copyright infringement
- Passing off
- Punter’s Way
- Racing Guide
- Tables
- Get-up
- Goodwill
- Misrepresentation
- Colour coding
15.2 Keywords
- Copyright
- Passing off
- Horse racing
- Publication
- Infringement
- Goodwill
- Misrepresentation
16. Subjects
- Copyright
- Passing off
- Intellectual Property
17. Areas of Law
- Copyright Law
- Passing Off
- Intellectual Property Law